Rosetta Stone v. Google Trademark Case Headed Back to Court

By Maryam K. Ansari, Esq. on April 10, 2012 9:05 AM

If you’ve ever used Google’s Adwords, you’ll understand the significance of
this case. The Fourth Circuit Court of Appeals on Monday revived parts of a
lawsuit by Rosetta
Stone against Google for trademark infringement.

Google’s Adwords feature allows advertisers to purchase a keyword.
Essentially, when the keyword is then typed into a Google search, the paid
advertiser’s ad would appear in a prime location. So if “Rosetta
Stone” were the keyword purchased, then an Internet user typing in that word
would see the paid advertiser’s featured ad pop up among the search results.

With regard to trademarks, Google has the policy that an advertiser can
purchase a trademarked term only if (1) the purchaser is a reseller of that
trademarked product, (2) the purchaser makes or sells component parts for that
trademarked product, (3) the purchaser offers compatible parts or goods for use
with that trademarked product, or (4) the sponsor provides information or
reviews about the trademarked product.

Rosetta Stone claims that this policy still hasn’t prevented Google from
selling the trademarked words to counterfeit producers of Rosetta Stone
products. The result, claims Rosetta Stone, is not only a likelihood of
confusion but actual confusion by consumers.

In entering a summary judgment against Rosetta Stone, the district court held
that there was no issue of genuine fact as to whether there was a likelihood of
confusion by Google’s use of the trademark “Rosetta Stone.” The court also said
that the “functionality doctrine” shielded Google from any liability.

The Fourth Circuit Court of Appeal remanded the case and directed the district
court to examine when Google first appeared to dilute the trademark, and whether
or not the trademark was well recognized at the time of dilution.

The determination of these questions will no doubt be on the radar of IP
lawyers across the world, as this isn’t the first time that Google AdWords has
come under heat.

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U.S. Fourth Circuit features news and information from the U.S. Fourth Circuit Court of Appeals, which hears appeals from U.S. District Courts in North Carolina, South Carolina, Virginia, West Virginia, and Maryland. This blog also features news that would be of interest to legal professionals practicing in the 4th Circuit. Have a comment or tip? Write to us.